The European Patent Office (EPO) will shortly change its practice for filing divisional applications, removing a controversial deadline for doing so.
Currently Rule 36 EPC, which was introduced in 2010, requires that divisional applications be filed either:
- Two years from the first office action;
- Two years from the first unity of invention objection (if raised); or,
- The day before grant of the patent (if this is less than two years from the first office action).
Contrary to the objectives of the Rule, since its implementation the number of divisional applications filed increased. The increase is attributed to applicants’ strategy of filing ‘precautionary’ divisional applications.
As of 1 April 2014 applicants will be able to file divisional applications up until the day before the grant of the patent, returning to pre-2010 practice. Any application pending on 1 April 2014, regardless of expiry of the previously imposed two year period, will be eligible for filing a divisional. Applications that are close to being allowed may benefit from using deadline extensions so the application will be considered under the new rules.
The EPO has also announced that there will be additional fees for second (and later) generation divisional applications. The fees start at €210 for a second generation applications and increase to €840 for fifth generation or later applications. Applicants who wish to file second (or later) generation divisional applications who are within the current two year period for doing so may wish to consider filing their divisional applications before 1 April 2014 to avoid the fee increase.
If you have a pending European patent application and would like to discuss how this change affects your application, or if you would like to know more about protecting your intellectual property in Europe or elsewhere, please contact us.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for legal advice. Please contact a Baldwins attorney or other IP professional before acting on any information contained in this publication.